Ex Parte Mayer

Board of Patent Appeals and Interferences

May 16, 2007

10440859 (B.P.A.I. May. 16, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM N. MAYER
____________

Appeal 2007-0403
Application 10/440,859
Technology Center 3700
____________

Decided: May 16, 2007
____________

Before CHUNG K. PAK, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the Examiner's final rejection of claims
11 through 28, all of the claims pending the above-identified application.
We have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134.

Appeal 2007-0403
Application 10/440,859

I. APPEALED SUBJECT MATTER
The subject matter on appeal is directed to a shipping container for
temperature-sensitive goods as illustrated in Figures 3 and 4 of the present
application (Specification 2-5 and 10-12). Details of the appealed subject
matter are recited in representative claims 11 and 12 reproduced below:
11. An apparatus defining a retention chamber and
having sequential layers of (i) an inner phase change material
having a melting point, (ii) a first layer of thermal insulation,
(iii) an outer phase change material having a melting point
which is different from the melting point of the inner phase
change material, and (iv) a second layer of thermal insulation,
wherein the retention chamber is fully encompassed by the
inner phase change material.

12. An apparatus, comprising:

(a) a first enclosure defining a retention chamber and
containing a first phase change material having a melting point
which completely encompasses the retention chamber,

(b) a first insulating layer completely encompassing the
first enclosure,

(c) a second enclosure containing a second phase
material having a melting point which is different from the
melting point of the first phase change material, wherein the
second phase change material completely encompasses the first
insulating layer, and

(d) a second insulating layer completely encompassing
the second enclosure.

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Application 10/440,859

II. PRIOR ART
As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
Hjertstrand US 4,145,895 Mar. 27, 1979
Purdum US 5,899,088 May 4, 1999
Choy US 6,233,965 B1 May 22, 2001
Bostic US 6,266,972 B1 Jul. 31, 2001

III. REJECTION
The Examiner has rejected the claims on appeal as follows:
1) Claims 11 through 14 and 19 through 28 under 35 U.S.C. §
103(a) as unpatentable over the combined teachings of Bostic, Choy, and
Purdum; and
2) Claims 15 through 18 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Bostic, Choy, Purdum, and
Hjertstrand.

IV. ISSUE
1. Has the Examiner demonstrated that a person having ordinary skill
in the art would have been led to place an additional phase change
material (cooling medium) having a melting point different from
that of a first phase change material between two insulation layers
in Bostic’s shipping container or freezer pallet within the meaning
of 35 U.S.C. § 103?

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Appeal 2007-0403
Application 10/440,859

V. PRINCIPLES OF LAW
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary consideration (e.g., the
problem solved). Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
17-18, 148 USPQ 459, 467(1966). “[A]nalysis [of whether the subject
matter of a claim is obvious] need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41,
82 USPQ2d 1385, 1396 (2007) quoting In re Kahn, 441 F.3d 977, 988, 78
USPQ2d 1329, 1336-37 (Fed. Cir. 2006); see also DyStar Textilfarben
GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361, 80
USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The motivation need not be found in
the references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ
545, 549 (CCPA 1969)(“Having established that this knowledge was in the
art, the examiner could then properly rely, as put forth by the solicitor, on a
conclusion of obviousness ‘from common knowledge and common sense of
the person of ordinary skill in the art without any specific hint or suggestion
in a particular reference.’”); In re Hoeschele, 406 F.2d 1403, 1406-07, 160
USPQ 809, 811-812 (CCPA 1969) (“[I]t is proper to take into account not
only specific teachings of the references but also the inferences which one
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Appeal 2007-0403
Application 10/440,859

skilled in the art would reasonably be expected to draw therefrom...”). The
analysis supporting obviousness, however, should be made explicit and
should “identify a reason that would have prompted a person of ordinary
skill in the art to combine the elements” in the manner claimed. KSR, 127
S.Ct. at 1731, 81 USPQ2d at 1389.
VI. ANALYSIS, FACTS, AND CONCLUSIONS OF LAW
As evidence of obviousness of the claimed subject matter under § 103,
the Examiner has primarily relied on the disclosures of Bostic, Choy, and
Purdum (Answer 3-5). The Examiner has correctly found at page 3 of the
Answer that Bostic teaches a modular freezer pallet comprising a heat sink
material (a phase change material) for maintaining desired cooling in the
interior chamber and a layer of insulation between the heat sink material and
the outer wall. (See also Bostic, col. 2, ll. 39-52, and col. 4, ll. 28-51). The
Examiner has recognized that Bostic does not teach employing another
phase change material having a different melting point and another
insulation layer as required by independent claims 11 and 12 (Answer 3-4).
To remedy these deficiencies, the Examiner has referred to the
disclosures of Choy and Purdum (id). The Examiner has found that “Choy
teaches that in order to achieve further and better insulation, another series
of insulators can be additionally nested within each other” and Purdum
teaches a plurality of reservoirs having different phase change materials in
direct contact with the interior chamber of a shipping container (id). It
appears to be the Examiner’s position that these findings would have led one
of ordinary skill in the art to place sequentially an additional phase change
material (having a melting point different than that of the first phase change
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Application 10/440,859

material) and an additional insulation layer over Bostic’s phase change
material and insulation layer (Answer 3-5). The Appellant does not agree
with this position (Br. 3-5).
The dispositive question is, therefore, whether the Examiner has
demonstrated that a person having ordinary skill in the art would have been
led to place the above additional phase change material between two
insulation layers of a shipping container or a freezer pallet within the
meaning of 35 U.S.C. § 103. On this record, we answer this question in the
negative.
As indicated supra, both Bostic and Purdum employ their phase
change materials (cooling medium) directly in contact with the interior
chamber of a freezer pallet or a shipping container to maintain desired
cooling temperatures or conditions therein. As also indicated supra, Choy
repeats only insulation layers (not cooling and insulation layers) to improve
insulation. From these facts, there is no apparent reason to provide any
phase change material (cooling medium), much less a phase change material
having a different melting point, between two insulation layers. To do so
would run counter to common sense of a person of ordinary skill in the art
and the purpose of using the phase change material since the insulation
layers would prevent the phase change material from performing its desired
cooling function. Thus, contrary to the Examiner’s contentions at page 4 of
the Answer, we determine that a person having ordinary skill in the relevant
art would not have been led to the claimed subject matter within the
meaning of 35 U.S.C. § 103.

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Application 10/440,859

VII. ORDER
The decision of the Examiner is reversed.

REVERSED

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